Legal Definitions - Section 8 and 15 affidavit

A Section 8 and 15 affidavit (often filed as a combined declaration) is a critical legal document submitted to the U.S. Patent and Trademark Office (USPTO) by a trademark owner. It serves two distinct, but often combined, purposes related to maintaining and strengthening a registered trademark:

• Section 8 Affidavit (Declaration of Continued Use): This part of the filing confirms that the registered trademark is still actively being used in commerce for the goods or services listed in the registration. This filing is mandatory at specific intervals (between the 5th and 6th year after registration, and then every 10 years thereafter) to prevent the trademark registration from being canceled.
• Section 15 Affidavit (Declaration of Incontestability): This part declares that the trademark has been in continuous use for five consecutive years since its registration, and that there have been no successful legal challenges or adverse decisions concerning the trademark owner's rights during that period. Filing this declaration makes the trademark "incontestable," which significantly strengthens the owner's legal rights by limiting the grounds upon which the trademark's validity can be challenged in the future.

By filing a combined Section 8 and 15 affidavit, a trademark owner simultaneously demonstrates ongoing use and secures a higher level of legal protection for their brand.

Examples:

• Example 1: A Local Bakery's Brand Protection

  Imagine "Sweet Delights," a popular local bakery, registered its unique name and logo five years ago. They have been continuously selling cakes, pastries, and bread under this brand ever since. To ensure their trademark registration remains active and to secure stronger legal rights, the bakery's owner files a combined Section 8 and 15 affidavit. The Section 8 portion confirms to the USPTO that "Sweet Delights" is still actively used on their products and storefront. The Section 15 portion declares that the mark has been in continuous use for five years without any successful legal challenges, making their trademark "incontestable." This means competitors will have a much harder time challenging the validity of the "Sweet Delights" trademark in the future.

• Example 2: A Software Company's Product Name

  A tech startup, "Quantum Leap Software," successfully registered its distinctive product name for its innovative data analytics platform six years ago. Since then, the software has been continuously marketed and sold under the "Quantum Leap" brand. To maintain their registration and enhance their protection against potential infringers, their legal team prepares and files a Section 8 and 15 affidavit. The Section 8 declaration provides evidence that "Quantum Leap" is still actively being used in commerce for their software services. Simultaneously, the Section 15 declaration asserts that the mark has been in continuous use for over five years without any adverse legal rulings, thereby making the "Quantum Leap" trademark incontestable. This significantly strengthens their position should a competitor try to argue that the name is generic or merely descriptive.

• Example 3: A Fashion Designer's Clothing Line

  A fashion designer launched a luxury clothing line under the trademark "Ethereal Threads." Five years and three months after successfully registering the trademark, the designer's legal counsel advises them to file a Section 8 and 15 affidavit. By doing so, the designer confirms that "Ethereal Threads" apparel is still being sold in boutiques and online (satisfying the Section 8 requirement). At the same time, because the mark has been in continuous use for over five years without any successful legal challenges, the designer can declare it incontestable (fulfilling the Section 15 requirement). This dual filing ensures the trademark remains registered and provides the designer with robust legal defenses against any future claims challenging the originality or ownership of the "Ethereal Threads" brand.